“The invention has nothing to do with how that computer
program would be structured or how it would be written, but with
what the program must do,” said Hearing Officer Stephen
Probert.
Few Java programmers need to learn Sun’s Java Bytecode
instruction set. But it is used to execute their programs on a wide
variety of different platforms, including PCs, mobile phones and
pagers. The problem with the existing Bytecode instruction set is
that it is large, with over 220 instructions, many of which
overlap.
On a PC, this is not a problem; but Sun’s proposal for a reduced
instruction set will carry out all the operations of the original
set, but improve performance on systems with limited resources,
such as embedded systems.
The case examiner looked at the application and decided that it
related to a program for a computer as such, and was therefore not
patentable under the Patents Act. Sun disagreed, and the case came
before Hearing Officer Stephen Probert.
He assessed the case in the light of a High Court ruling from
last year concerning a company known as CFPH LLC. In that decision
the Court held that “a patentable invention is new and non-obvious
information about a thing or process that can be made or used in
industry.”
It also set out a two-stage test for assessing what is new and
not obvious:
- Firstly, examiners had “to identify what it is the advance in
the art that is said to be new and non-obvious (and susceptible of
industrial application);” and
- Secondly, examiners should “determine whether it is both new
and not obvious (and susceptible of industrial application) under
the description 'an invention' (in the sense of Article 52 [of the
European Patent Convention]).”
In this case, said Hearing Officer Probert, the invention was
both new and inventive under the European Patent Convention.
“There is no doubt that the invention as claimed would involve a
computer program for its implementation; the applicant also says
that this is the case. But as CFPH indicates, that does not
establish, in and of itself, that the invention is not patentable,”
he explained.
In his opinion it was right to consider whether the advance
involves a technical effect when considering whether it was new and
not obvious.
“In this case, I do not consider that the invention lies in
excluded subject matter as such, i.e. a computer program,” he said.
“The invention was almost certainly made at a much earlier stage in
the creative process, before any computer program had been written
(or flowcharts generated) with a view to implementing the
invention.”
